Being able to associate a product or service with ® to designate a federally registered trademark is a strong business tool.

Purchasing decisions are continually influenced by trademarks by distinguishing products from one another and indicating a level of authenticity and quality about products and services. The International Trademark Association (INTA) in their Top Ten Reasons Why You Should Care About Trademarks calls a Trademark the Most Efficient Commercial Tool Ever Devised.

Trademarks areany word, term, name, symbol, or device, or any combination thereof that are used in commerce as brand names, domain names, tag lines, slogans, non-functional and distinctive packaging and labeling designs, etc. to indicate the source of a good (product) or service and distinguish (make distinctive) one good (product) or service from another. Potential trademarks must function as a mark to be protected under trademark law.

Only non-functional and distinctive elements of a product or service are protected by law as trademark rights. (see TMEP 1202.02(a)). Functional aspects of a product or service are covered (if at all) under patent law with a limited term of protection whereas trademarks are not limited in term (except by nonuse).

Distinctiveness is the measure of the inherent strength of a mark( is it a weak or strong trademark?). An inherently distinctivetrademark [as opposed to a descriptive or generic trademark] is a strong trademark. An inherently distinctive trademark may be registered on the USPTO Trademark Principal Register, qualifies for more protection under more federal, state and common law and is stronger for use in business to promote authenticity and for expanding product lines. The stronger the trademark the greater protection received from the courts. Nike, Inc. v. Just Did It Enterprises, 6 F.3d at 1231 (C.A.7 (Ill.), 1993) quoting Squirtco v. Seven-Up Co., 628 F.2d at 1091 (8th Cir.1980).

At best, a merely descriptive trademark may only potentially be registered on either the USPTO Federal Principal Register after 5 years of acquired distinctiveness (has achieved a secondary meaning) with the proper evidence or on the Supplemental Register. See Comparison for the advantages of federal registration and the differences between the two registrations.

According to the USPTO (see merely descriptive refusals): The two major policy reasons for not protecting [allowing registration of] descriptive marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and (2) to avoid the possibility of costly infringement suits brought by the registrant. This thus enables businesses and competitors to have the freedom to use common descriptive language when merely describing their own goods or services to the public in advertising and marketing materials. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382, 383 (C.C.P.A. 1968); Armour & Co. v. Organon Inc., 245 F.2d 495, 114 USPQ 334, 337 (C.C.P.A. 1957); In re Styleclick.com Inc., 58 USPQ2d 1523, 1526-1527 (TTAB 2001); In re Styleclick.com Inc., 57 USPQ2d 1445, 1448 (TTAB 2000).

Surname Refusals

Surnames are categorized as potentially being merely descrptive marks. How does the USPTO determine if a surname is common enough to be merely descriptive and issue a surname refusal? The census. See http://www.census.gov/genealogy/www/data/2000surnames/index.html for a list of the most common surnames.

Is there anything worse than being merely descriptive? Being .Generic.

An unregistered mark that is merely descriptive or generic may not actually be a trademark but just words or a trade name because it may not be legally protectable.

Federal trademark infringement, 15 U.S.C. S 1114, and federal unfair competition, 15 U.S.C. S 1125(a)(1)(A), are measured by identical standards. “To prove either form of Lanham Act violation, a plaintiff must demonstrate that (1) it has a valid and legally protectable mark; (2) it owns the mark; and (3) the defendant's use of the mark to identify goods or services causes a likelihood of confusion.” A&H Sportswear v. Victoria's Secret Stores, 237 F.3d at 210 (3rd Cir., 2000).

In addition to distinctiveness, to be a valid mark, a mark applying for registration must actually function as a trademark.:

Not everything that a party adopts and uses with the intent that it function as a trademark necessarily achieves this goal or is legally capable of doing so, and not everything that is recognized or associated with a party is necessarily a registrable trademark. As the Court of Customs and Patent Appeals observed in In re Standard Oil Co., 275 F.2d 945, 947, 125 USPQ 227, 229 (C.C.P.A. 1960):

The Trademark Act is not an act to register words but to register trademarks. Before there can be registrability, there must be a trademark (or a service mark) and, unless words have been so used, they cannot qualify for registration. Words are not registrable merely because they do not happen to be descriptive of the goods or services with which they are associated.” Trademark Manual of Examining Procedure (TMEP) 1202.

Also, an unregistered mark must actually have been used as a trademark [is a valid mark and functions as a mark] to be protected under trademark law. "[A] plaintiff must show that it has actually used the designation at issue as a trademark"; thus the designation or phrase must be used to "perform[ ] the trademark function of identifying the source of the merchandise to the customers." Microstrategy Incorp. v. Motorola, 245 F.3d at 341 (4th Cir., 2001) quoting Rock & Roll Hall of Fame v. Gentile Prods., 134 F.3d 749, 753 (6th Cir. 1998). SeeValid and Invalid Uses of Words, Number, Symbols, etc. as Trademarks.

Secondary Meaning

Secondary meaning is when the consuming public has made a link between an alleged mark and the source of the mark.

Evidence of secondary meaning or acquired distinctiveness may include specific dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark as a source identifier, affidavits, and any other evidence that establishes the distinctiveness of the mark as an indicator of source. See 37 C.F.R. §2.41(a); In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant Transactions Corp., 201 USPQ 957 (TTAB 1979); TMEP §§1212.06 et seq. The United States Patent and Trademark Office decides each case on its own merits-whether or not the evidence is sufficient to show acquired distinctiveness is dependent of the facts of each registration application.

The Broadest Protection Format for Trademarks

For the broadest protection, the standard character format should be used to register word(s), letter(s), number(s) or any combination thereof, without claim to any particular font style, size, or color, and absent any design element. Registration of a mark in the standard character format will provide broad rights, namely use in any manner of presentation. The stylized or design format, on the other hand, is appropriate if you wish to register a mark with a design element or word(s) or letter(s) having a particular stylized appearance that you wish to protect. The two types of mark formats cannot be mixed in one mark. A distinctive stylized format may also be registrable when the standard character format of the same word(s) cannot be registered on their own where the distinctiveness of the mark is obtained from the design rather than the word(s).

Types of Registrations (mark categories)

Trademarks associated with goods or products;

Service marks associated with the delivery of services;

Certification marks associated by the characteristics of someone’s goods or services; and

When creating trademarks, one essential requirement in order to be registrable on the USPTO Trademark Principal Register is that the trademark is distinctive. What is a distinctive name for the purposes of obtaining a trademark from the United States Patent and Trademark Office (USPTO) is found in the Trademark Manual of Examining Procedure (TMEP) in Section 1209.01.

Distinctiveness is the opposite of descriptiveness for trademark purposes. The distinctiveness of trademarks varies along a continuum (often depending on use) from being highly distinctive (or inherently distinctive) to being merely descriptive or generic. Highly distinctive marks that are arbitrary, fanciful or suggestive are registrable on the USPTO Trademark Principal Register. Marks that are merely descriptive matter may potentially be considered to be registered on the Principal Register if they have acquired distinctiveness with Secondary Meaning (must be proven with evidence and at least 5 years of use). Generic marks (common or class names for goods or services) are not registrable as trademarks under either the Principal or Supplemental Register. Composite marks, mark that are partly descriptive or generic and partly suggestive, arbitrary or fanciful, may be registrable on the Principal Register with the descriptive or generic part disclaimed for exclusive use.

The terms are further defined in TMEP 1209.01: “Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are either unknown in the language (e.g., PEPSI, KODAK, EXXON) or are completely out of common usage (e.g., FLIVVER).”

“Arbitrary marks comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services (e.g., APPLE for computers; OLD CROW for whiskey).”

“A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.”

“Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services.”

“Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services. . . .Suggestive marks, like fanciful and arbitrary marks, are registrable on the Principal Register without proof of secondary meaning. Therefore, a designation does not have to be devoid of all meaning in relation to the goods/services to be registrable.”

Federal USPTO Trademark Registration

There are many statutory advantages of Federal Registration for trademarks on the Principal Register above and beyond those provided by common law including:

Can be used against future applications of confusing similar marks by the USPTO;

Provides access to anti-counterfeiting statutes. For example, a trademark on the Principal Register can be recorded with US Customs and Border Protection (CBP) to prevent importation of infringing goods;

Ability to bring federal criminal charges against traffickers in counterfeits;

Use of the U.S. registration as a basis for prior use to obtain registration in foreign countries without having actual use in commerce in those countries.

Not Just Patents ® Legal Services provides a very economical package for USPTO (or international) Trademark Registration and provides domestic representation for foreign applicants. See What to Expect from a Not Just Patents ® Trademark Attorney for more information on what steps we take to protect your rights and help you develop a strong trademark.

We suggest our service and our plan-a Not Just PatentsFive-Part Verification as part of a Plan for A Successful Trademark:

To Verify a potential trademark is strong, available to use, and ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these steps:

There are no canned answers on how to answer office actions for the refusals received because there are many refusals that are not typical refusals. Registration of a mark is specific to the facts involved. (See Function As A Mark for more Office Actions.) Some refusals are dependent not only on the trademark being proposed (very fact specific) but also on how the application is filled out, especially the specimens submitted. Sometimes just a better specimen is all it takes. Sometimes a better identification of goods and services. Sometimes parts of the trademark must be disclaimed. Sometimes the applicable law must be examined and arguments made that are very specific to the actual words and designs being proposed. Sometimes the only choice is amending to the Supplemental Register. It depends on what is being rejected and why.

Not every office action has an answer, some proposed trademark applications just do not comply with U.S. Trademark Law and do not qualify for common law protection because they are conflicting marks (have a likelihood of confusion with another trademark or trade name), lack distinctiveness or lack acquired secondary meaning or the capability of acquiring secondary meaning. Sometimes a new application can solve the problem, sometimes the mark must be incorporated with other elements to add distinctiveness.

If your trademark has value and you want to preserve the trade identity rights that you have already invested and secure more rights through federal registration, it may be best to hire a legal representative to answer your office action as prescribed within the USPTO Trademark Rules and Procedures. The cost of having a Not Just Patents ® Legal Services provide your Response to Office Action (ROA), Amendment to Allege Use (AAU), or Statement of Use (SOU) may be less than what you think and the time saved may be months or years.

Not Just Patents ® and Aim Higher® are federally registered trademarks of Not Just Patents LLC for Legal Services on the Principal Register.

Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

Call: 1-651-500-7590 or email: WP@NJP.legal. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy PolicyContact Us